DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/12/2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 6-8 & 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Amended claim 1 claims “a display and an input device”, however the specification fails to provide support for the new limitations. Additionally, new limitations throughout claim 1, adds “processor”, however the specification fails to provide support for the above limitation as well. Furthermore, amended claim 1, also claims “displaying on the display” throughout the claim, however the specification does not provide support for the above limitation as well. Thus, claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, had possession of the claimed invention.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-4, 6-8 & 10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S.___(2014).
Claims 1-4, 6-8 & 10 are directed to mathematical relationships/formulas. As such, the claims are directed to statutory subject matter under Step 1 of the Alice flowchart as directed to a judicial exception (i.e. an abstract idea).
Addressing the claims under Step 2A, the claims are held to be directed to concepts similar to those found to be abstract, either as outlined in the 2014 lEG/July 2015 Update to Subject matter eligibility, or, as compared to certain decisions rendered by the courts. The claims describe conducting a lottery based on Merkle tree derived formula and sorting manner. Addition of the limitations that narrow the idea merely aide in the description of the abstract idea and therefore do not render the claims any less abstract.
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The claims at issue are directed to mathematical algorithms (i.e. Merkle tree formulation and similar sorting manner). Claim 1 states, “wherein the step 4 further comprises:
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In particular, the courts have found mathematical algorithms to be abstract ideas (i.e. a mathematical procedure for converting one form of numerical representation to another in Benson, or an algorithm for calculation parameters indication an abnormal condition in Grams). The courts have found that analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category (See Electric Power Group, LLC v. Alstom S.A., (Fed. Cir. 2015) citing e.g., TLI Commc'ns, 823 F.3d at 613; Digitech, 758 F.3d at 1351; Bancorp Servs., L.L.C. v.Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011); SiRFTech., Inc. v. Int'ITrade Comm'n, 601 F.3d 1319,1333 (Fed. Cir. 2010); see also Mayo, 132 S. Ct. at 1301; Parker v. Flook, 437 U.S. 584, 589-90 (1978); Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
Step 2A, Prong Two: Claims 1-4, 6-8 & 10 does not contain additional patentable elements that integrate the abstract idea exception into a practical application because the additional elements are mere instructions to apply the abstract idea exceptions; MPEP § 2106.05(f). (2) generally link the judicial exception to a particular technological environment, i.e. mathematical formulas; MPEP § 2106.05(h); (3) are insignificant extra solution activity; MPEP § 2106.05(g). The additional elements are limited to generic computer components performing mathematical algorithms/formula, as stated in claim 1, including “step 1: by the input device, inputting a number of winners in a lottery and participants in the lottery; step 2: by the input device, submitting personal data of each of the participants; step 3: at the beginning of the lottery, clicking and confirming a random time stamp by the participant via the input device; step 4: recording the personal data and the random timestamp of each participant on the memory, constructing a Merkle tree with an SM3 algorithm by the processor, taking a root of the Merkle tree as a random seed, and disclosing the random seed on the display; step 5: taking the random seed as an input, and iteratively running the SM3 algorithm to obtain a random string of the participant; step 6: by the processor, sorting all of the random strings in a descending manner; step 7: by the processor, selecting the winners in the lottery according to the given number of winners, displaying the winner on the display and ending the lottery; step 8: verifying the random seed of the lottery: by the input device, allowing the participant to resubmit the personal data and the random timestamp, and by the processor verifying a legality of the random seed with a membership certification function of the Merkle tree; and step 9: verifying a lottery result: by the processor, iteratively running the SM3 algorithm on a legal random seed, and reproducing and verifying the lottery result on the display”. As indicated in the rejection above, the claim language discloses elements which are limited to generic computer components performing mathematical algorithms/formula. The additional elements, in the preamble include “a processor”; “a memory, wherein the memory stores instructions for the processor to perform”, however, the new added elements do nothing to integrate the abstract idea exception into a practical application.
Therefore, while it is understood that the claims in the current application are not verbatim recitations of the guidelines or case law, the detailed analysis provided above shows how the current claim limitations at issue closely parallel the concepts provided by the guidelines and the precedential case law, and are therefore considered to be directed to an abstract idea (Step 2A: YES).
Under Step 2B, the examiner acknowledges the additional limitations (i.e. an interfaces or websites, interactions with websites, and various forms of software for presenting information to users). However, under Step 2B, no element or combination of elements is sufficient presented to ensure the claim as a whole amounts to significantly more that the abstract idea itself. For example, the components generically claimed to enable calculation of Merkle tree for management of the lottery by performing the basic functions of: (i) receiving, processing, and storing data, and (ii) receiving or transmitting data over a network, e.g., using the Internet to gather data. The courts have recognized these functions to be well-understood, routine, and conventional functions when claimed in a merely generic manner. Particularly, In re TLI Communications LLC (Fed Cir, 2016) held that adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible. As such, the recitation of claims 1-4, 6-8 & 10 amounts to mere mathematical formula to derive lottery game.
Additionally, these limitations are merely recitations of mathematical formula to enable calculation of Merkle tree for management of the lottery, amount to nothing more than implementing the abstract idea with routine, conventional activity specified at a high level of generality in a particular technological environment. When viewed either as individual limitations or as an ordered combination, the claims as a whole do not add significantly more to the abstract idea of mathematical formula to enable calculation of Merkle tree.
Ultimately, the claimed machine(s) function solely as an obvious mechanism to achieve the claimed result, failing to impart a meaningful limit on the claim scope [see SiRF Tech., Inc. v. ITC (Fed. Cir. 2010)]. The claims at issue here do not rise to overriding the routine and conventional sequence of events ordinarily performed by the computer, nor do they set forth with any specificity the interactions of the machine itself. Conversely, the claims are only specific in using mathematical formula to enable calculation of Merkle tree, and are silent as to any detail or property that would transform the otherwise generic machinery into a specialized or special purpose machine.
Thus, under Step 2B, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The claims provide minimal technical structure or components for further consideration either individually or as ordered combinations with the independent claims. As such, additional recited limitations in the dependent claims only refine the identified abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
Response to Arguments
Applicant's arguments filed 12/30/25 have been fully considered but they are not persuasive.
Applicant’s arguments rely on language solely recited in preamble recitations in claim 1. When reading the preamble in the context of the entire claim, the recitation “which is implemented in a lottery system comprising a processor and a memory, wherein the memory stores instructions for the processor to perform the following steps…” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
The examiner would like to reiterate that pre-Alice, it was the Office's position that limiting the claims to a computer-implemented embodiment was enough to overcome this problem and confer patent-eligibility. With the Alice decision, this is no longer the case. Implementing an abstract idea on a generic computer will not confer patent-eligibility. Since Applicant's invention is the implementation of certain methods of organizing human activities using mathematical formula, it cannot be patent-eligible.
Regarding the applicant’s arguments that Claims “provides a new verifiable random lottery method, which is implemented in the specific machine and solves the technical problems in the existing technology and achieves a corresponding technical effect”. The examiner respectfully disagrees. The claims are directed to a method being implemented via a computing device, thus are directed to a "computer program" not embodied as claimed on any statutory subject matter (e.g., a non-transitory computer readable storage medium). Functional descriptive material such as a computer program must be structurally and functionally interrelated with a medium to allow its intended uses to be realized. Accordingly, claims directed to software per se are not statutory subject matter see In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1760 (Fed. Cir. 1994). See MPEP § 2106.01 for further guidance and discussion on computer-related nonstatutory subject matter.
Additionally, examiner would like to point out comparison decision in Enfish, LLC v. Microsoft Corporation, et al. (Enfish), which indicates that currently presented claims does not provide specific improvements in computer capabilities. In Enfish, Court found that claims are directed to a specific improvement to the way computers operate, - a particular database technique - in how computers could carry out one of their basic functions of storage and retrieval of data. The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools (enhance a degree of participation of the users in the lottery). Comparing to Enfish, the recited functions do not improve the functioning of computers itself, including of the processor(s) or the network elements. There are no physical improvements in the claim (i.e. a faster processor or more efficient memory), and there is no operational improvement, like mathematical computation that improve the functioning of the computer. The conclusion that the claims of the instant invention is not directed to an improvement of an existing technology is bolstered by the specification’s teachings that the claimed invention achieves other benefits is not technological, but are “abstraction” or “entrepreneurial.” Therefore, claims does not provide a specific means or method that improves the relevant technology, but, instead, is directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. Applicant did not invent a new type of computer. Applicant like everyone else programs their computer to perform functions. The Supreme Court in Alice indicated that an abstract claim might be statutory if it improved another technology or the computer processing itself. Using a (programmed) computer to implement a common business practice does neither.
Consequently, 35 USC 101 rejection of claims 1-4, 6-8 &10 is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNIT PANDYA whose telephone number is (571)272-2823. The examiner can normally be reached M-F 9:30-6:30PM.
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/SUNIT PANDYA/Primary Examiner, Art Unit 3715
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